DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is a Non-Final Office Action for application 18/642487 which has been examined as part of the PBA program.
Claims 1-8 are pending and have been fully considered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
It is noted that no Information Disclosure Statement has been filed.
Specification
The use of the term Dionex, UltiMate and Orbitrap Fusion Lumos, in paragraph 0015 of the specification, which are trade names or a marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to Claims 1 & 5, the preambles recite “to promote the growth of cotton plants un low light conditions,” however nothing in the claim body says anything about using any cotton or any form of light? Therefore, is promoting cotton growth under low light really what the claim is directed towards? Or is it something completely different?
Further with respect to Claims 1 & 5, term “low” in claims are relative terms which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Further with respect to Claims 1 & 5 they are unclear. They recite “…a. Preparing the KHP solution by mixing 70 (or 50) kg of feathers whose content is 46% (or 50%) water and 0 (or 40) kg of water in a sealed container…”
The examiner notes that a “solution” is known in the art is “a homogenous mixture of two or more substances”. In the claimed step a, the mixture would result in a suspension/dispersion, not a solution (i.e., homogenous mixture), of feathers in water and therefore, it is unclear how one would obtain a solution by mixing feathers and water. Claims 2-4 and 6-8 also recite “the solution”. Further, applicant does not provide a special definition for a “solution,” and therefore the claims are unclear as to what is meant by this.
Further with respect to Claims 1 & 5 in step b) “the mixture,” does not have proper antecedent basis since “mixture,” is not used in the claim priorly and therefore it is unclear what it refers back to.
Further with respect to claims 1 & 5 they are unclear due to the recitation “…contain at least 253 peptides as listed in the specification.” With respect to this, it is unclear if applicant means that the solution or mixture will automatically and always contain 253 peptides which are listed in the specification, or if instead the solution just might possibly contain some of them. Further- its again, unclear where these peptides would come from in the claim. Is it from the claimed feathers or water? From the cotton in the preamble? Or from the KHP solution?
Further in Claims 1 & 5 are unclear as they recite: “…contain at least 253 peptides as listed in the specification where their molecular masses are between 500 and 4,000 Daltons, and the concentration is in the range of 2.0 x 105 ≈ 4.5 x 105 ppm...” It is unclear if the recited range for molecular masses and the recited range for concentration is for the combined “at least 253 peptides” or an individual peptide from “the at least 253 peptides”. Furthermore, is the concentration based on the peptide concentration in the hydrolyzed mixture? This is also not clear from the recitation above.
Claim 1 & 5 are further not clear as they claim"…using a mass spectrophotometer to confirm the combination of peptides in the solution…" and “…applying the KHP solution…” in claims 1 and 5 (steps c and d). There is insufficient antecedent basis for these limitations in the claim. Prior to these limitations, claims 1 (and 5) recite two steps; step a: “…preparing the KHP solution by putting 70 (and 50) kg of feathers whose content is 46% (and 50%) water and 0 (and 40) kg of water in a sealed container” and step b: “…hydrolyzing the mixture in the container with a temperature and pressure setting of 180 (and 185) °C and 13 (and 12) kg/cm2 for a duration of 40 (and 80) minutes…”. So, in steps c and d, one does not know if “the solution” or “the KHP solution” has antecedent basis to the solution formed in step a or step b. KHP stands for keratin hydrolysis peptide so one of ordinary skill in the art would think that the KHP solution would by the hydrolyzed product (product of step b), but “KHP solution” is recited in step a and not step b. Therefore, it is unclear what this limitation refers to and how to interpret the claims.
With respect to Claims 2 & 6, they recite “true,” which is a relative term. What one person considers to be a “true,” leaf, another might not. Therefore, it is unclear what is meant by this is the claims. Further, it is unclear what “the,” in “the third true leaf,” refers back to, and it is assumed applicant means “a,” instead of “the,” for proper antecedent basis.
With respect to Claims 3-4 & 7-8 the claimed “ratio of 1:50 – 600, is unclear. It is unclear if this ratio range is 1:50 to 600 (or 500):1 or 1:50 to 1:600 (or 500) and of which component is which on the respective sides of the ratio.
Claims 2-4 and 6-8 are also unclear by virtue of their dependency on Claims 1 & 5. Applicant should further check the claims for issues which are similar to those in Claim 1. For example, “the solution in Claims 3-4 & 7-8,” it is unclear if applicant means “the KHP solution,” or not.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over JUAREZ MOLINA in WO 2023001946 in view of WEI in WO 2016054310.
With respect to Claims 1 & 5, JUAREZ MOLINA teaches of a process for converting keratin into a liquid mixture comprising peptides and/or amino acids (Abstract).
Specifically, JUAREZ MOLINA teaches a method comprising the following steps: a) decomposing a keratin containing material in presence of at least one species of microorganism apt to decompose keratin to obtain a decomposed keratin containing material; b) treating the decomposed keratin containing material to obtain a modified keratin containing material; c) treating said modified keratin containing material with at least a proteolytic enzyme to obtain a keratin hydrolysate, said keratin hydrolysate comprising a liquid fraction and a solid fraction, said solid fraction comprising two further fractions: a soluble fraction and a not-soluble fraction; and d) treating said keratin hydrolysate to obtain a liquid mixture comprising peptides and/or amino acids, said treating comprising a step of separating said liquid fraction from said solid fraction (Claim 1).
JUAREZ MOLINA use pig hair as the keratin containing starting material (Example 1), but generally teach wherein keratin is a major structural component of animal feathers and that birds’ feathers have high keratin content (Page 1, lines 9-21).
JUAREZ MOLINA further teaches that the peptides have a molecular weight between 150 and 10,000 Daltons (Page 3 lines 29-31). This overlaps and includes the claimed range for Daltons, making the claimed range obvious. See MPEP 2155.05.
JUAREZ MOLINA further teaches that in step b, steam explosion is a process in which biomass is treated with hot steam at a temperature from 110-160 °C under pressure from 1 to 5 bar, which results in the rupture of the keratin fibrous structure (Page 6, lines 22-27), which is close to the claimed range for temperature setting. As indicated in MPEP §2144.05(I): a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, which is the instant case.
JUAREZ MOLINA further teaches that the liquid fraction of the keratin hydrolysate comprises from 25% to 40% by weight of peptides having a MW of 400-10,000 Da (Page 10, line 19).
JUAREZ MOLINA teaches that the liquid mixture comprising peptides (i.e., KHP) that can be used as a plant bio-stimulant and more specifically, used to improve and/or stimulate one or more of germination, rooting, growth, flowering, curdling and maturation of plants and fruits (Page 11, lines 6-10 and claims 7 and 9-10). JUAREZ MOLINA teaches that the liquid mixture including peptides can be applied in its different variants to any type of plant, at any stage of plant development, on any soil and form of cultivation (Page 3, lines 6-16).
With respect to the temperature and pressure limitations of instant claims 1 and 5, there is no teaching away of going outside of the taught range of JUAREZ MOLINA and there is nothing in the instant specification to indicate criticality, so what is claimed is made obvious.
With respect to the exact peptides “listed in the specification”, it is noted that if feathers undergo the same steps, the same peptides would result in the liquid mixture, as this is a material property of the feathers so this is considered to be taught.
Further with respect to the dilution limitations of instant claims 1 and 5, JUAREZ MOLINA a teaches that the keratin material is diluted into water in a proportion of 15-40% w/v prior to the steam explosion.
JUAREZ MOLINA does not teach a particular embodiment that starts with feathers, as required by instant claims 1 and 5, and exemplify pig hair as the keratin containing starting material ( Example 1), but generally teach wherein keratin is a major structural component of animal feathers and that birds’ feathers have high keratin content (Page 1 lines 9-21).
Although JUAREZ MOLINA does teach that the liquid mixture including peptides can be applied in its different variants to any type of plant and that the abovementioned composition can be used to improve and/or stimulate germination, rooting, growth, flowering, curdling and maturation of plants and fruits, JUAREZ MOLINA does not specifically teach wherein the plant treated is cotton however the examiner again notes that there is a 112b rejection with respect to this as shown above.
WEI however is used to cure these deficiencies.
WEI teaches of a hypersensitive-response eliciting peptides that exhibit improve solubility, stability, resistance to chemical degradation. WEI teaches that its peptides composition can treat plants or plant seeds for example, when it is known that harvested cuttings or fruit or vegetables are intended to be shipped great distances or stored for long periods of time post-harvest, wherein exemplary plants include cotton among many others (paragraph 0206).
It would have been obvious to one of ordinary skill in the art, before effective filing date of the invention to modify JUAREZ MOLINA by extracting keratin hydrolyzed peptides from feathers instead of pigs’ hair to achieve the predictable result of obtaining a composition suitable for production of keratin hydrolyzed peptides due to the advantages JUAREZ MOLINA shows in the cited sections above of birds feathers having a high keratin content.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention, to use the method as is done in JUAREZ MOLINA instead as application to cotton plants, from the limited number of plants disclosed by WEI as a design choice, with reasonable expectation. It would have been obvious to do this by one of ordinary skill in the art due to the advantages WEI teaches that its peptide composition is effective in enhancing plant yield in a vast array of plants, which include cotton (WEI, paragraph 0206).
With respect to Claims 2 & 6, JUAREZ MOLINA teaches that the abovementioned liquid mixture including peptides can be applied in its different variants to any type of plant, at any stage of plant development, on any soil and form of cultivation (e.g., foliar application – leaf spray, irrigation – soil infusion) (Page 3, lines 6-16). JUAREZ MOLINS does not teach wherein the soil infusion is done after seed planting or when the cotton seedling’s third true leaf appears or wherein the leaf spray application is done when the cotton seedling’s third true leaf appears.
However, due to the teaching of application “at any stage of plant development,” to time of soil infusion or leaf spray application, this is made obvious, as the claimed stages of plant development would be included in the taught range. Further- see MPEP 2144.05 (l) and 2144.05 (III). Therefore, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
With respect to Claims 3-4 & 7-8, JUAREZ MOLINA a teaches that the keratin material is diluted into water in a proportion of 15-40% w/v prior to the steam explosion (Page 6, lines 22-27). As shown in the 112b rejection, the instantly recited ratio can be interpreted as 1:50 to 500:1 or 1:50 to 1:500, as instantly claimed and therefore, this is considered to make these instant ratios obvious as best they can be understood in light of the 112 rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-8 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over:
claims 1-12 of US Patent Application No. 18/389,780 (grape);
claims 1-5 of US Patent Application No. 18/403,246 (cucumber);
claims 1-5 of US Patent Application No. 18/408,245, now US Patent No. 12,527,269 (soybean);
claims 1-4 of US Patent Application No. 18/643,738 (wheat);
claims 1-3 of US Patent Application No. 18/409,790 (cotton);
claims 1-4 of US Patent Application No. 18/409,792 (cotton);
claims 1-4 of US Patent Application No. 18/412,611 (corn);
claims 1-4 of US Patent Application No. 18/412,615 (wheat);
claims 1-3 of US Patent Application No. 18/418,259 (corn);
claims 1-8 of US Patent Application No. 18/428,193 (tomato);
claims 1-5 of US Patent Application No. 18/531,687 (coffee);
claims 1-6 of US Patent Application No. 18/533,181 (tea);
claims 1-8 of US Patent Application No. 18/534,628 (grape);
claims 1-8 of US Patent Application No. 18/536,211 (wheat);
claims 1-6 of US Patent Application No. 18/536,214 (coffee);
claims 1-8 of US Patent Application No. 18/537,395 (cotton);
claims 1-9 of US Patent Application No. 18/639,751 (soybean);
claims 1-3 of US Patent Application No. 18/639,950 (soybean);
claims 1-3 of US Patent Application No. 18/642,007 (corn);
claims 1-4 of US Patent Application No. 18/642,445 (asparagus);
claims 1-7 of US Patent Application No. 18/643,756 (corn);
claims 1-6 of US Patent Application No. 18/645,293 (lettuce);
claims 1-6 of US Patent Application No. 18/645,307 (lettuce);
claims 1-3 of US Patent Application No. 18/645,354 (soybean);
claims 1-8 of US Patent Application No. 18/645,293 (tomato);
claims 1-6 of US Patent Application No. 18/658,824 (corn);
claims 1-8 of US Patent Application No. 18/658,834 (lettuce);
claims 1-6 of US Patent Application No. 18/668,598 (cotton);
claims 1-4 of US Patent Application No. 18/671,837 (wheat);
claims 1-6 of US Patent Application No. 18/671,848 (soybeans);
claims 1-10 of US Patent Application No. 18/748,493 (corn);
claims 1-10 of US Patent Application No. 18/758,140 (tea leaves);
claims 1-6 of US Patent Application No. 18/774,885 (melon);
claims 1-6 of US Patent Application No. 18/778,049 (cabbage);
claims 1-3 of US Patent Application No. 18/827,519 (cabbage);
claims 1-9 of US Patent Application No. 18/898,195 (rice); and
in view of WEI in WO 2016054310.
Although the conflicting claims are not identical, they are not patentably distinct from each other because all claim sets are drawn to the same method of treating a plant species (see species in parenthesis above) comprising preparing a KHP solution by mixing a keratin product (e.g., feathers) with an overlapping water content and overlapping and/or similar amount of water in a sealed container, hydrolyzing said mixture in the sealed container under overlapping and/or similar temperature and pressure conditions, confirming the solution has the 253 peptides (SEQ ID Nos: 1-253) with the same and/or overlapping molecular masses and concentration via mass spectrometer analysis, and applying said KHP solution, which has been diluted with water by a volume (1:50-1:500 or 1:50-500:1 ratio range) to the plant species via leaf spray or soil infusion at various times of plant development. As indicated in MPEP §2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists” and “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”
The difference is that the copending applications recite different plants species (see plant species in parenthesis after each copending application No.) that is treated by the same method steps with the same composition. However, Wei teaches that its peptides composition can treat plants or plant seeds for example, when it is known that harvested cuttings or fruit or vegetables are intended to be shipped great distances or stored for long periods of time post-harvest, wherein exemplary plants include, without limitation, alfalfa, apple, apricot, asparagus, avocados, bananas, barley, beans, beech (Fagus spec), begonia, birch, blackberry, blueberry, cabbage, camphor, canola, carrot, castor oil plant, cherry, cinnamon, citrus, cocoa bean, coffee, corn, cotton, cucumber, cucurbit, eucalyptus, fir, flax, fodder beet, fuchsia, garlic, geranium, grapes, ground nut, hemp, hop, juneberry, juncea (Brassica juncea), jute, lentil, lettuce, linseed, melon, mustard, nectarine, oak, oats, oil palm, oil-seed rape, olive, onion, paprika, pea, peach, pear, pelargonium, peppers, petunia, pine (Pinus spec), plum, poplar (Populus spec), pome fruit, potato, rape, raspberry, rice, rubber tree, rye, sorghum, soybean, spinach, spruce, squash, strawberry, sugar beet, sugar cane, sunflower, tea, teak, tobacco, tomato, triticale, turf, watermelon, wheat and willow (Salix spec), Arabidopsis thaliana, Saintpaulia, poinsettia, chrysanthemum, carnation, and zinnia [0206]. Such provides support in the prior art that a peptide composition can provide enhanced plant yield to a large variety of plants including cotton and all of the copending plant species (see underlined species above).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to use the method of the copending claims and choose application to cotton plants from the limited number of plants disclosed by WEI as a design choice, with the reasonable expectation. One of ordinary skill in the art would be motivated to do so, because Wei specifically indicated that its peptide composition is effective in enhancing plant yield in a vast array of plants, one of which was tea. By doing such, one of ordinary skill in the art would have chosen from a finite number of predictable solutions and would have used and identified tea leaves as suitable to be used in the copending claimed method (WEI, paragraph 0206).
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA M FRITCHMAN whose telephone number is (303)297-4344. The examiner can normally be reached 9:30-4:30 MT Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at 571-270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA M FRITCHMAN/Primary Examiner, Art Unit 1758
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